"While 'abstract ideas' are not patentable in the United States, the UK does not consider abstraction relevant when considering patentable subject matter. Either the patent claims, for example, a business method or it does not."
Lord Justice Jacob noted the temptation to treat patent-eligible subject matter like an elephant: "you know it when you see it, but you can't describe it in words." He went on, however, writing that "[a]ctually we do not think that is right – there are likely to be real differences depending on what the right approach is. Billions (euros, pounds or dollars) turn on it." These comments could not have been more correct. Huge outcomes depend on the approach taken to determine patent-eligible subject matter.
The United States, UK and European Patent Office (EPO) each take a different approach. Some ask, do these amount to "real differences"? And, if so, which if any is the "right approach"? This article attempts to grapple with those questions by first providing an overview of how courts address patentable subject matter and then comparing the respective standards.
The U.S. Alice Framework
The relevant U.S. statute, 35 U.S.C. § 101, provides little guidance on what constitutes patentable subject matter. Instead, U.S. patent eligibility is a creature of common law; courts define the boundaries of patentable subject matter. Central to this is the U.S. Supreme Court's long held view that 35 U.S.C. § 101 contains an important implicit set of exceptions: laws of nature, natural phenomena, and abstract ideas are not patentable.
In the landmark Alice case, the U.S. Supreme Court approved a two-step framework for the eligibility analysis. A recent U.S. case concerning digitally tagging images, Angel Tech, helpfully demonstrates the U.S. Court of Appeals for the Federal Circuit's application of this framework. The remaining patent claim, claim 15, related to inserting a specific digital image into a user's photo album. Under the first Alice step—whether the claim is directed to a patent-ineligible concept—the Federal Circuit found it was directed to an abstract idea: "collecting photos in a photo album" and "sending information in response to an input ... does not make the idea less abstract" because "[s]uch functionality merely invokes computers as a tool." The court therefore advanced to the second step, where it found the claim did not contain additional elements that transformed the nature of the claim into a patent-eligible application – the claim "refers to nothing more than well-understood, routine, and conventional technology components and does not add significantly more to the abstract idea it recites." The claim was ineligible because it required only "generic computer components that perform generic computer functions."
The UK Aerotel Framework
Unlike in the United States, the UK statute expressly lists categories of patent ineligible subject matter, including business methods and computer programs. Each enumerated item has its own independent existence – there is no "overarching principle" intended by these excluded categories. The list, however, is not all encompassing. Even if patentable subject matter does not fall afoul of the UK statute's exclusions, it may still be within a separate list of exceptions to patentability, which includes methods of treating humans or animals by surgery or therapy and diagnostic methods.
The UK courts apply a four-step test, known as the Aerotel stages, when analyzing patent ineligible subject matter. The Emotional Perception decision illustrates application of this test. This case involved a patented system for providing media file recommendations (such as songs) based on an artificial neural network. The Court of Appeal did not consider claim construction (the first step), and went directly to step two, identifying the actual contribution. In doing so, it adopted the UK Intellectual Property Office's (UKIPO's) hearing officer's identification of the actual contribution as "the training of the [artificial neural network] [through weights] which analyses the physical properties of the [media] file by pairwise comparisons of training files." For the third step—whether the contribution falls solely within the excluded subject matter—the court focused on whether an artificial neural network is a "computer program" under the statute and therefore excluded from patentability. The court concluded that "the weights ... of the [artificial neural network] are a program for a computer and therefore within the purview of the exclusion." It did not stop there, however, but considered the fourth step: whether there was anything in the actual contribution beyond the computer program itself. It answered this question in the negative; the elements beyond the artificial neural network, namely media file recommendations, were "subjective and cognitive in nature" and so non-technical. The patent application was thus founded ineligible.
The EPO's Two-Hurdle Approach
Article 52(2) of the European Patent Convention contains a non-exhaustive list of topics that must not be regarded as patentable inventions. Article 52(3) qualifies paragraph 2 by excluding matter to the extent the application relates to such subject-matter "as such." Article 53 also provides a separate list of exceptions to patentability, which, like the UK, includes methods of treating humans or animals by surgery or therapy and diagnostic methods.
The EPO approach when assessing patent-eligible subject matter under Article 52 is known as the two-hurdle approach. First, without considering the prior art, the EPO considers whether the claim involves any technical means. If so, it is patent eligible. So, for example, "a claim directed to a computer-implemented invention avoids exclusion ... merely by referring to the use of a computer, a computer-readable storage medium or other technical means." As you can imagine, this often is a somewhat easy hurdle to overcome.
If the first hurdle is met, then the EPO performs a novelty/inventive step analysis with non-technical features "as such" excluded (i.e., those that do not interact with the technical subject matter of the claim for solving a technical problem). Like the U.S. and UK approaches, the assessed invention needs to be "technical" beyond the use of a general-purpose computer; but unlike the United States and the UK, the substantive patentable subject matter analysis is, in effect, folded into the other patent requirements.
Are These 'Real Differences'?
A notable difference between the U.S. approach, on the one hand, and both the UK's and EPO's, on the other, is found in the statutes (or lack thereof). The U.S. statute is silent on what constitutes patent ineligible subject matter other than stating that a patent can be obtained for a process, machine, manufacture, or composition of matter. In stark contrast, the UK statute and EPC explicitly exclude categories of subject matter. While U.S. case law has found implicit exceptions (laws of nature, natural phenomena, and abstract ideas), these are not grounded in any categories that mirror those excluded in the UK and EPO.
So, unlike in the UK and EPO, the U.S. courts have found business methods and computer programs are not categorically excluded – although the courts have found some claims to business methods and computer programs unpatentable. On the other hand, while "abstract ideas" are not patentable in the United States, the UK does not consider abstraction relevant when considering patentable subject matter. Either the patent claims, for example, a business method or it does not.
Different policies may explain these varied approaches. For example, the U.S. approach to whether a patent seeks to claim subject matter that is directed to an abstract idea is often viewed as a pyramid. Ideas at the top of the pyramid lack sufficient concreteness or application, and are thus ineligible, whereas ideas further down the pyramid have sufficient improvements, limitations or applications to bring them into patentable subject matter. In other words, subject matter at the top is said to be unjustifiably preemptive; it claims too much and gives too little. Because this pinnacle subject matter are "the basic tools of scientific and technological work," tying it up through patents, says the Supreme Court, "might tend to impede innovation more than it would tend to promote it." On the other hand, the Court recognizes the danger of placing too much at the top, which "could eviscerate patent law ... [f]or all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Therefore, U.S. subject matter battles sometimes reflect these competing interests: preemption and incentivization.
The UK and EPO approaches are said to be more geared towards keeping patent rights in their lane. As explained in Aerotel, "[s]ome categories are given protection by other intellectual property laws. Most importantly, of course, aesthetic creations and computer programs have protection under the law of copyright. So the legislator may well have formed the view that additional protection by way of patentability was unnecessary or less appropriate." The UK Supreme Court also found that the non-invention categories promote certainty, as further explained:
"There is evidence, in the shape of the mass of US litigation about the excluded categories, that they have produced much uncertainty. If the encouragement of patenting and of patent litigation as industries in themselves were a purpose of the patent system, then the case for construing the categories narrowly (and indeed for removing them) is made out. But not otherwise."
There are, on the other hand, notable similarities at the core of the three approaches. For example, the U.S., UK and EPO each recognize a need to issue patents where there is something more than patent-ineligible concepts involved. In each, an application claiming, for example, a computer program is not automatically ineligible. Eligibility depends on whether the claim contains "additional elements" (in the United States) or claims more than the excluded subject matter or activities "as such" (in the UK and EPO). But they diverge over how much more is needed to become patent-eligible. The answer in the EPO is typically "not much," whereas the United States and UK impose a higher threshold. As the UK Court of Appeal explained in Emotional Perception, "the mere fact that computers are involved (which are as technical in nature as one could ever imagine) does not make the contribution technical."
Relatedly, the U.S. and UK approaches also align with their consideration of prior art in the eligibility analysis. U.S. courts evaluate the claimed advance over the prior art under the first Alice step, and UK courts likewise identify the actual contribution, i.e., the claimed contribution beyond the prior art. Both seemingly search for what the inventor claims to have added to human knowledge, which involves understanding what existed in the prior art. The EPO, in contrast, excludes prior art from the eligibility analysis, which itself is a consequence of the EPO pushing the substantive eligibility consideration further down the analysis.
This all begs the question, are the higher thresholds in the United States and UK compared to the EPO worth it? Why not, like the EPO, fold the ineligibility analysis into the other patent requirements—novelty, nonobviousness/inventive step, and enablement/sufficiency? The U.S. Supreme Court has warned against this:
"This approach ... would make the 'law of nature' exception to § 101 patentability a dead letter ... [S]hift[ing] the patent eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do."
It rejected an EPO-type approach, i.e., fold eligibility into the novelty/nonobviousness analysis and exclude non-technical features such as laws of nature from that analysis. Why? Because the relevant statutory provisions of anticipation and obviousness (35 U.S.C. §§ 102 and 103) "say nothing about treating laws of nature as if they were part of the prior art when applying those sections" and "studiously ignoring all laws of nature when evaluating a patent application under §§ 102 and 103 would make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious."
In sum, there are apparent "real differences" between the patent eligibility frameworks adopted by the United States, UK and EPO, stemming from varying underlying policies and interplay with the other patent requirements. The "right approach" remains unclear, but I think many would agree, patent eligibility is nothing like spotting elephants.
Originally published by IPWatchdog
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